WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Jennifer Worden

Case No. D2014-1201

1. The Parties

The Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Jennifer Worden, Sussex, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <marlboro-m.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2014. On July 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. Apart from an email communication dated August 6, 2014, no formal Response was filed with the Center. Following the Respondent’s communication the case was suspended so that the Parties could explore settlement; no settlement was reached and on September 9, 2014 the procedure was reinstated at the request of the Complainant.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on September 23, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panelist exercised his discretion to admit the Respondent’s communication of August 6, 2014 (reproduced below), despite it apparently being filed one day after the deadline for the Response.

4. Factual Background

The Complainant’s business is the large-scale manufacture and sale of cigarettes and tobacco products. One of the Complainant’s best known cigarette brands is Marlboro. The Complainant is the holder of at least two United States trademarks for MARLBORO; registrations which date from 1908 and 1972, respectively. A number of UDRP panels have found the MARLBORO trademark to be famous. See, e.g. Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”). The Complainant and its Group have spent substantial effort in marketing and promoting the MARLBORO trademarks and brand, including through the Complainant’s website “www.marlboro.com”.

The disputed domain name was apparently created in January 2014, and first detected by the Complainant in July 2014.

5. Parties’ Contentions

A. Complainant

The Complainant believes that the Respondent registered the disputed domain name in an attempt to trade on the goodwill and fame of the MARLBORO Trademarks, including by receiving revenue when an Internet user visits the site to which the disputed domain name resolves and clicks on items offered for sale there. The Complainant asserts that all three elements of paragraph 4(a) of the Policy are met and asks that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not submit a formal Response to the Complaint but sent an email communication on August 6, 2014, which has been accepted by the Panel. That communication reads, in its entirety, as follows:

“I would like to start off by saying that this domain name was never purchased in “bad faith” as the complainant says. We purchased this domain name in order to start a legitimate business for our children. While the purchased domain name does have the Marlboro name in it we never intended to use it for anything associated with Phillip (sic). Morris, their trademark logos, or tobacco related products at all. We are a small family and have no history of purchasing domain name in bad faith. We are currently making no money off of links from this domain name (it is currently parked by GoDaddy and if anyone is making money off of links from this site it is them) and have also not tried to resell it to anyone else like the complainant states. I believe that we were well within our rights to purchase this domain name. All being said, after being advised by my counsel, we will forfeit our rights to the domain name. We were advised that even though we were well within our rights to purchase said domain name that Phillip (sic) Morris would not stop there. Their large pockets will make it absolutely impossible to win this case in the long run. We cannot afford to take this to federal court and therefore we will forfeit the domain name now before it gets to that point. I would also like it to be known that had Philip Morris just contacted us from the very beginning we likely could have avoided all of this. I am saddened by the fact that their “procedure” is to treat everyone as if they are a criminal doing something wrong without speaking to them in the first place. Once again we are forfeiting our rights to “www.marlboro-m.com” as of today even though we were well within our rights to purchase it.

I thank you for your time,

Jennifer Worden”.

The Parties factual and legal assertions are further discussed in Section 6 below.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name begins with and contains the entirety of the Complainant’s well-known trademark, a point the Respondent essentially admits. The addition of “-m” to the Complainant’s trademark in the disputed domain name does little or nothing to dispel the confusing similarity with that trademark, and could be regarded as a form of “typosquating”.

There is no question but that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no connection with it, was never given any license or right to use the Complainant’s trademarks, does not have any legitimate rights in the term “Marlboro” and is not known by the name “Marlboro” or any variation of it.

The Respondent, in its August 6, 2014 communication, does not deny any of the above. Although the Respondent’s communication states that it intended to use the disputed domain name “to start a legitimate family business for our children”, this odd and unsupported assertion does not establish any right or legitimate interest in the disputed domain name. Moreover, the communication states “we are forfeiting our rights to www.marlboro-m.com”, which is presumably either a renunciation of any rights the Respondent might have had in the disputed domain name—although no such rights are apparent or proven—or an admission that it has none.

The Panel concludes that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant essentially asserts that, given the fame of the MARLBORO trademark, the Respondent can only have registered the disputed domain name with knowledge of the Complainant’s rights. This very plausible assertion is not denied by the Respondent whose communication states that “we never intended to use [the Marlboro name] for anything associated with Phillip (sic) Morris, their trademarked logos, or tobacco products at all.” Respondent thus all but admits its pre-registration awareness of the Complainant and its rights, and seeks to provide an excuse in the hope of legitimizing its use of the disputed domain name. Although the Respondent claims “we were within our rights to purchase” the disputed domain name, it does not indicate for what specific purpose it would be using that domain name, or how that purpose could be legitimate and in good faith in light of its awareness of the Complainant’s extensive prior rights. The unexplained assertion that the Respondent did not intend to sell tobacco products, even if true, also does not demonstrate good faith on the part of the Respondent. It is well established that the use of another’s trademark to attract internet users for commercial gain is a bad faith use, and this can be true even if the products sold or offered do not compete with those of the Complainant.

In the instant case the disputed domain name leads to a genre of “pay per click” site offering a variety of goods and services, including the sale of domain names. The use of the disputed domain name to attract users to such a site is a bad faith use under the Policy. The Respondent’s assertion that the disputed domain name is “parked” and “we are not currently making money off of the links from this domain name” is not a refutation of the evidence of bad faith use. Even were the disputed domain name “parked”, it is well established that on facts such as are present here a passive use can be in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. In short, although the Respondent’s self-serving communication seeks to deny bad faith registration and use it provides no clear explanations, nor any evidence, to rebut the evidence and circumstances that point to such bad faith.

The Panel accordingly finds that the disputed domain name was both registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marlboro-m.com> be transferred to the Complainant.

Nicolas Ulmer
Sole Panelist
Date: September 29, 2014